Nautilus v. Biosig – Solving Insoluble Ambiguity?
Today the Supreme Court unanimously rejected the Fed. Cir.’s standard for resolving challenges to validity under s.112 para.2, based on whether or not a claim was “amenable to construction” and not “insolubly ambiguous”. Noting that Nautilus had urged that a patent is invalid when the level of ambiguity is such that “readers could reasonably interpret the claim’s scope differently” and that Biosig and the Solictor had argued s.112(2) is met when the patent provides “only” reasonable notice of the scope of the claimed invention, the Court attempted to reach a middle ground:
“Cognizant of the competing concerns, we read s. 112, para. 2 to require that a patent’s claims, viewed in light of the specification and prosecution history, inform those skilled in the art about the scope of the invention with reasonable certainty…[citing]” Markman, 517 U.S., at 389 (claim construction calls for ‘the necessarily sophistication analysis of the whole document,’ and may turn on evaluations of expert testimony.”
The Court reaffirmed precedent holding that definiteness is to be evaluated from the perspective of someone skilled in the relevant art, at the time that the patent was filed, and that claims are to be read in light of the patent’s specification and prosecution history. The Court unambiguously and repeatedly rejected the “insolubly ambiguous standard”:
“It cannot be sufficient that a court [resolving a s.112(2) question] can ascribe some meaning to a patent’s claims; the definiteness inquiry trains on the understanding of a skilled artisan at the time of the patent application, not that of a court viewing matter ad hoc. To tolerate imprecision just short of that rendering a claim ‘insolubly ambiguous’ would diminish the definiteness requirement’s public-notice function and foster the innovation-discouraging ‘zone of uncertainty’…against which this court had warned.”
As in Mayo v. Prometheus, patent drafters were viewed as part of the problem, since any zone of uncertainty would provide patent applicants with “powerful incentives to inject ambiguity into their claims”… Eliminating that temptation is in order, and “the patent drafter is in the best position to resolve ambiguity in …patent claims.” So I guess that we patent drafters can be part of the solution now that all that ambiguity has been cleared up.
I have a particular interest in case law that affects patent prosecution, so it is worrisome that, in footnote 9, the Court indirectly criticized the examination standard set forth in MPEP s.2173.02(I) (9th ed. 2014) as “describing Federal Circuit’s test as upholding a claim’s validity ‘if some meaning can be gleaned from the language’.”
Will this decision lead to the Office issuing “guidelines” to help Examiner’s apply this new standard to resolve “vague and indefinite” rejections?
During prosecution, patent attorneys can provide evidence that a claim element is adequately described in the specification, and can even provide declarations as to the understanding of the POSA as of the filing date, but patent prosecutors cannot meet the litigation standard that requires that claim meaning be determined in part by the entirety of the prosecution history in a situation in which a rejection has been made, and prosecution is incomplete.
What, exactly, did Nautilus win? The Fed. Cir. decision was vacated and remanded, but the Supreme Court pointed out that there were lots of functional parameters to help determine what sort of “spaced relationship” the grippable electrode pairs should have, both in terms of their relationship to the user and to each other. The Court extensively discussed the points made by the inventor in a declaration filed during reexamination which, we are told in a footnote, referenced an experiment in which a lab technician, given the specification, reproduced the invention in two hours. Finally the Court noted that the Fed. Cir. panel was unanimous in finding that the claims were not vague and indefinite.
So does Nautilus really think that this new standard will change the opinions of the panel? Neither party’s position was adopted and only one outcome is “reasonable certain”. It is that litigants – and likely patent prosecutors as well – will be arguing about the metes and bounds of “reasonable certainty” for years to come.